In 1709 (or was it 1710?) the Statute of Anne created the first purpose-built copyright law. This blog, founded just 300 short and unextended years later, is dedicated to all things copyright, warts and all. To contact the 1709 Blog, email Eleonora at eleonorarosati[at]gmail.com

Wednesday, 13 May 2015

A case of Berries triumphing over Blossom

Since at least the
middle of the last century intellectual property law has recognised
the overlap between copyright and design right. The Registered
Designs Act 1949 was intended to create a separate system for
protecting designs for practical items which did not fall into any of
the categories protected under the existing copyright or patent law.
The Copyright Designs and Patents Act 1988 then introduced a separate
(unregistered) design right which, like copyright, came into effect
at the moment a design was fixed in some permanent form such as a
design drawing or prototype.

One of the drawbacks of
the UK unregistered design right is that it does not apply to the
surface decoration of the object, although assuming that the surface
decoration has some artistic aspect and is not commonplace,
copyright might well apply to that characteristic of the product.

In 2001 Mr Bodo Sperlein designed a decorative pattern (shown on the right) intended
to be applied to tableware, consisting of twigs bearing red berries.
Understandably the design was marketed as the Red Berry collection. Mr Sperlein produced this ceramic
tableware through his own company Bodo Sperlein Ltd (BSL) and it was
very successful.

In March 2013 the
company discovered that another supplier (the second defendant) was
importing tableware with a very similar design (theirs was known as
‘Red Blossom’) and was selling it through a number of outlets,
including one operated by the first defendant. At trial it transpired
that the Red Blossom decoration had been designed by the second
defendant although the actual products were made for them in China -
the country, not the type of ceramic! Because Sabichi Ltd and Sabichi
Homewares Ltd have the same managing director who was seen as the
controlling mind of both companies, they were referred to jointly as
‘Sabichi’ unless it was necessary to distinguish the individual
actions of one or other company.

BSL claimed that the
copyright in the design document for the Red Berries had been
infringed by Sabichi Homewares Ltd. Sabichi Homeware’s defence was
one of independent creation. Their principal designer, Ms Hayley
Adams had produced a design known as ‘Twiggy’ in about 2006 and
this used the colours platinum and silver. After Ms Adams had left
Sabichi, the company resurrected the design and changed the colour to
red. The court noted that there were other significant differences
between the original Twiggy design and the Red Blossom pattern which
appeared on the final products.

BSL sought to undermine
the independent creation defence by submitting that a Ms Jenna
Blackwell who Ms Adams had identified as her assistant when she was
at Sabichi, was probably the same person as a Ms Jenna Backwell who
had applied to work at BSL in February 2010. In her application to
join BSL, Ms Backwell spoke of her various research projects,
including frequent trips to the Maison & Objet show held annually
in Paris. It was at the Maison & Objet show in 2002 that BSL had
launched their Red Berries range, and this was featured in a number
of subsequent shows including in 2005 when Ms Backwell attended the
show. The court was not required to decide if Ms Backwell was the
same person as the Ms Blackwell referred to by Hayley Adams because
it transpired that Ms Adams had herself also visited the Maison &
Objet show while she was employed by Sabichi, and when the BSL Red
Berries range was on display there. The BSL evidence concerning Ms
Backwell (who did not appear as a witness) was only submitted on the
first day of the trial, but HHJ Hacon allowed it to be admitted in
view of its probable significance in the case and because the defence
would have the opportunity to test it in cross-examination. The judge
also, reluctantly, allowed Sabichi to introduce some late evidence
about the early development of the Twiggy design, but only on the
condition that Ms Adams was recalled on day two for
cross-examination on this new evidence.

Twiggy was shocked

The submission of the
new Twiggy evidence significantly altered Sabichi’s version of
events. The introduction of later versions of Twiggy (designs 2 –
6) now accounted for the way in which the Twiggy design came to match
the Red Blossom design which appeared on the finished product
marketed by Sabichi.

The issues it came down
to were: did Hayley Adams copy the Red Berries design when she made
the Twiggy design and, if so, did she copy a substantial part? Is the
Red Blossom Design a copy of the Red Berries design, and, if so, was
a substantial part copied? If Sabichi were found to have infringed
BSL’s design, the court would then have to deal with certain
matters concerning the quantum, and costs.

As is often the case
where independent creation is argued, the court had to rely heavily
upon the credibility of the main witnesses. Ms Adams was thought to
be generally truthful and accurate in her evidence, but seemed to be
conscious of ‘not letting the side down’ However the court was
less impressed by the performance of Mr Sam Bagga, the managing
director of both defendants.

HHJ Hacon referred to
the principle set out by the House of Lords in the Designers Guild case that, where
copying had been established on a visual comparison, it almost
inevitably led to the conclusion that a substantial part had been
copied. But he noted that in the current case, the chain of
development, especially of the Twiggy/Red Blossom design, meant that
the question of substantiality might not be so clear cut. The test in
this case was whether the final Red Blossom design used a substantial
part of Mr Sperlein’s original design. The judge noted in passing
that the likelihood of the defendants having access to the Sperlein
original drawings was not at issue, and that if copying had occurred,
it would have been of the actual pattern which appeared on the Red
Berries collection of tableware. It was not disputed that the
original Red Berry design and the actual pattern which appeared on
the Red Berry range of tableware were essentially the same. If
copying had occurred, there were several points in the process at
which this could have occurred: in Ms Adams’s original Twiggy
design, in the later re-worked Twiggy designs, or after Ms Adams had
left the company when the Twiggy design was modified under the
direction of Mr Bagga to become the Red Blossom design. In the end
the court felt it was not necessary to decide exactly when the
copying might have occurred [41].

In the final analysis
the court found that the similarities between the two designs,
particularly the colour used in both cases, meant that the defence
had to produce strong compelling evidence to disprove the inference
of copying. In confirmation of his conclusion on this point, the
judge quoted from Ms Adams’s witness statement where she admitted:
“I do realise that the Court may look at these designs and have
difficulty telling them apart”. He felt that Ms Adams had failed to
demonstrate how she was inspired to independently come up with the
Twiggy design, and although she maintained she had not previously
seen the Sperlein designs, there had been a number of opportunities,
such as the 2006 Maison & Objet show, for her to have actually
done so. Mr Bagga’s evidence on how the choice of colour for the
Red Blossom came to be made was judged even less convincing.

The court found that
copying of a substantial part of Mr Sperlein’s design had occurred
and so Sabichi were liable for importing infringing copies into the
UK, and placing them on sale.

The court decided to
address the matter of damages and costs, without the need for a split
trial. The main dispute centred on whether an account of profits was
an appropriate remedy. The defence, quoting Kitchen LJ in Hollister Inc v Medik Ostomy Supplies Ltd, argued that this
would not be proportionate, and that since an account of profits was
an equitable relief, the court had discretion as to whether to apply
it or not. As this was a matter of secondary infringement, knowledge
by Sabichi that the goods were infringing copies would need to be
demonstrated if they were not to escape liability for damages. HHJ
Hacon had no difficulty in deciding that the defendants had the
necessary knowledge, in view of Mr Bagga’s clear involvement in
design and production of the Red Blossom range. He decided that an
account of profits was appropriate in this case, and awarded BSL
£31,703.01 plus interest, based on the total profits made by both
defendants.

Drawing of Twiggy by Failuresque. Used under a Creative Commons Attribution 2.0 Generic licence

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